Ex Parte Ahn et al

Patent Trial and Appeal Board

Dec 27, 2017

13009933 (P.T.A.B. Dec. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/009,933 01/20/2011 Mimi O. Ahn SVL920100071US1 1726
46157 7590 12/29/2017
EDELL, SHAPIRO, & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIMO O. AHN, STEVEN J. HAUPTMAN,
and KAVITA PATIL
Appeal 2016-004560
Application 13/009,9331
Technology Center 3600
Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—3, 6—9, 12—15 and 18—21. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim selective processing of reverse invoices within
financial computer or processing systems. Spec. [0001]
1 Appellants identify International Business Machines Corporation, as the
real party in interest. Appeal Br. 2.
Appeal 2016-004560
Application 13/009,933
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method of managing financial records
within a computerized financial system including a processor comprising:
generating a plurality of electronic invoices each including financial
information fur posting of that generated electronic invoice within the
computerized financial system, wherein each generated electronic invoice is
associated with a first identifier uniquely identifying that generated
electronic invoice, and l;vherein the posting of each of the generated
electronic invoices within the computerized financial system rectifies one or
more financial records of the computerized financial system to reverse a
corresponding prior processed invoice;
storing the associated first identifier of each of the generated
electronic invoices in the corresponding prior processed invoices and
controlling operations of the processor to prevent each of the corresponding
prior processed invoices from being reversed by another generated electronic
invoice;
selectively storing each of the generated electronic invoices without
the posting of that generated electronic invoice and rectification of the one
or more financial records;
retrieving individual ones of the stored electronic invoices from
among a plurality of stored invoices based on one or more corresponding
attributes received from a user and setting the status of a first stored
electronic invoice of the retrieved individual ones of the stored electronic
invoices to an approved status and the status of a second stored electronic
invoice of the retrieved individual ones of the stored electronic invoices to a
canceled status; and
controlling the posting of the stored electronic invoices in the
computerized financial system based on the status of the stored electronic
invoices, wherein controlling the posting of the stored electronic invoices
includes:
verifying the status of the stored electronic invoices;
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rectifying the one or more financial records by posting the first stored
electronic invoice with the approved status within the computerized financial
system;
removing the second stored electronic invoice with the canceled status
from the computerized financial system without the posting of the second
stored electronic invoice; and
removing the associated first identifier of the second stored electronic
invoice with the canceled status from the corresponding prior processed
invoice and controlling operations of the processor to enable the
corresponding prior processed invoice to be reversed by another
generated electronic invoice.
THE REJECTION
The following rejection is before us for review.2
Claims 1—3, 6—9, 12—15, and 18—21 are rejected under 35 U.S.C.
§101 because the claimed invention is directed to a judicial exception.
ANALYSIS
35 U.S.C. § 101 REJECTION
Claim 1 is representative of the independent claims before us on
appeal, which contain similar limitations, and is a method claim of steps
which recite, in pertinent part, viz.
retrieving individual ones of the stored electronic invoices from
among a plurality of stored invoices based on one or more corresponding
attributes received from a user and setting the status of a first stored
2 The Examiner has withdrawn the 35 U.S.C. § 112(a) and 35 U.S.C.
§ 112(b) rejections. (Answer 2).
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Application 13/009,933
electronic invoice of the retrieved individual ones of the stored electronic
invoices to an approved status and the status of a second stored electronic
invoice of the retrieved individual ones of the stored electronic invoices to a
canceled status; and
controlling the posting of the stored electronic invoices in the ...
financial system based on the status of the stored electronic invoices,
wherein controlling the posting of the stored electronic invoices includes:
verifying the status of the stored electronic invoices;
rectifying the one or more financial records by posting the first stored
electronic invoice with the approved status within the ... financial system;
removing the second stored electronic invoice with the canceled status
from the ... financial system without the posting of the second stored
electronic invoice; and
removing the associated first identifier of the second stored electronic
invoice with the canceled status from the corresponding prior processed
invoice and controlling operations ... to enable the corresponding prior
processed invoice to be reversed by another generated electronic invoice.
The Supreme Court
[s]et forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, . . . determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
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then ask, “[w]hat else is there in the claims before us?” To
answer that question, . . . consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as a search for an “‘inventive
concept’”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)) (internal citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in removing an associated first identifier of
a second stored electronic invoice with a canceled status from a
corresponding prior processed invoice and controlling operations to enable
the corresponding prior processed invoice to be reversed by another
generated electronic invoice. The Specification at 12 recites:
[0002] [Financial (FI) accounting systems
automatically post account entries to a General
Ledger in response to the entries being saved in the
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financial accounting systems. Occasionally, an
invoice produced by a financial accounting system
may need to be reversed or removed from financial
records within the General Ledger (e.g., in case of
an error without performing the return of the
goods, etc.). In order to accomplish reversal of the
invoice, a user may generate a reverse invoice for
processing by the financial accounting system.
The reverse invoice includes a transaction that
effectively modifies or nullifies the transaction of
the produced invoice within the financial records
of the General Ledger. The reverse invoice is
similarly posted automatically to the General
Ledger in response to the reverse invoice being
entered and saved in the financial accounting
system. When the reverse invoice contains an
error or is erroneously directed to the wrong
invoice, several accounting entries typically need
to be generated in order to correct this error within
the financial records of the General Ledger.
Thus, all this evidence shows that claim 1 is directed to a method of reverse
invoicing a prior processed invoice by another generated invoice. It follows
from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63
(1972) in particular, that the claims at issue here are directed to an abstract
idea. Like the algorithm in Gottschalk, the concept of reverse invoicing a
prior processed invoice by another generated invoice is a fundamental
economic practice because it preserves the financial integrity of the
enterprise at issue. The patent-ineligible end of the spectrum includes
fundamental practices, Alice, 134 S. Ct. at 2357. Also, the claimed steps,
e.g., generating invoices and associating each of the invoices with a
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respective one of a unique identifier, posting the invoices, approving or
cancelling selective ones of the invoices etc., are all steps that we, as
humans, go through in our own minds. We treat “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016). Thus, we find that the claimed task assignment method is
an “abstract idea” beyond the scope of § 101.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
reverse invoicing a prior processed invoice by another generated invoice, at
issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. See Alice, 134 S. Ct. at 2357. That the claims do
not preempt all forms of the abstraction or may be limited to the abstract
idea in the financial accounting setting (Specification 1: |2), does not make
them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer/processor into the claims does not
alter the analysis at Mayo step two.
[t]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea “while adding the words
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‘apply it’” is not enough for patent eligibility. Nor is limiting
the use of an abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while adding the words
“apply it with a computer” simply combines those two steps,
with the same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implemen[t]” an
abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
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are considered separately. Viewed as a whole, Appellants’ claims simply
recite the concept of reverse invoicing a prior processed invoice by another
generated invoice. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than instructions to cause reverse invoicing a
prior processed invoice by another generated invoice, on a generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
[a]re no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 134 S. Ct. at 2360 (alterations in original).
Appellants argue,
[I]n particular, the claimed techniques
provide for an improved way of correcting
previously entered database records having errors.
By generating an intermediate stage in the
correction process, a user may review the corrected
record (referred to as a reverse invoice) before
committing changes to the database in order to
reduce the likelihood of incurring additional errors
when processing reverse invoices (leading to a
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correction of the reverse invoice with another
reverse invoice). As the claimed features are not
directed towards fundmental economic practices,
but rather, improving operations of a database
(improving processing of a computer) used to
process financial records, the claimed subject
matter meets the statutory requirements of section
§101.
(Appeal Br. 17)
We disagree with Appellants that the improvement lies in “improving
the processing of a computer,” and rather find the improvement is directed to
the abstract process of reverse invoicing a prior processed invoice by another
generated invoice. We, therefore, find that the claims do not focus on a
specific means or method that improves the relevant technology, but are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We further disagree with Appellants that the claims in this appeal are
comparable to those presented in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), and thus patent eligible (Appeal Br. 19)
because in DDR Holdings, the claims at issue involved, inter alia, “web
pages displays [with] at least one active link associated with a commerce
object associated with a buying opportunity of a selected one of a plurality
of merchants” (claim 1 of US 7,818,399). There is no such web page with
an active link in the claims here before us. All that is required by claim 1 is
a “computing device” and an “independent discount management system.”
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In fact the Specification supports the view that the devices/system are
conventional. See, e.g., Paragraph 17.
Appellants’ remaining arguments are addressed by our analysis above,
and for the reasons stated therein we find them unpersuasive.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—3, 6—9,
12-15, and 18-21 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—3, 6—9, 12—15, and
18—21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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